Sky Optical LLC v Golden Cala Trading Est
[2023] ATMO 59
•15 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sky Optical LLC to registration of trade mark application number 1865606 (class 9) – LENS ME (figurative) – in the name of Golden Cala Trading Est
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Megan Evetts of counsel instructed by Gilbert + Tobin Lawyers Applicant: AJ Park |
| Decision: | 2023 ATMO 59 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60 and 62A pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Sky Optical LLC (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: (‘Trade Mark’)
Application number: 1865606
Owner: Golden Cala Trading Est (‘Applicant’)
Filing Date: 12 August 2017
Specification: Class 9: contact lenses (‘Goods’)
The acceptance of the Trade Mark for possible registration was advertised on 2 February 2021. The Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 30 April 2021. The Applicant filed a notice of intention to defend on 21 June 2021.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, Evidence in Reply (‘EIR’) was filed by the Opponent and an oral hearing was requested. Submissions were filed by the Applicant on 31 January 2023 (‘Applicant’s Submissions’) and by the Opponent on 3 February 2023 (‘Opponent’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 17 February 2023. Megan Evetts of counsel presented submissions on the Opponent’s behalf. The Applicant relied on its written submissions and did not attend the hearing.
This matter was heard concurrently with an opposition to Australian trade mark application 2136021 involving the same parties. For clarity, a separate decision has been issued for each matter.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 43, 58, 60 and 62A of the Act but the Opponent stated in its written submissions that it did not press the ground under s 43 of the Act. As such, I treat the s 43 ground as abandoned.
To be successful, the Opponent bears the onus of establishing at least one of the grounds.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 12 August 2017 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
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| EIA |
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| EIR |
|
EIS
According to Mack 1, Mr Mack is the registrant of the domain names lens.me.com and lens.me and the Opponent is the owner of the following trade mark:[3]
(‘Opponent’s Mark’)
[3] Mack 1, [5]. The Opponent’s Mark is the subject of Australian trade mark application 2136021 which has a priority date of 13 November 2020 and is currently opposed by the Applicant.
10. The Opponent’s Mark was originally the subject of International Registration 1371582 (‘IR’) held by Mr Mack.[4] The IR was considered in Golden Cala Trading Est v Florian Mack (‘Earlier Decision’)[5] wherein the Applicant opposed the extension of protection to Australia of the Opponent’s Mark in respect of classes 9, 35 and 44. The Earlier Decision found that, in the context of the s 58 ground of opposition, the Opponent was the first user in Australia of the Opponent’s Mark for all the designated goods and services.[6] As such, the Opponent (instead of Mr Mack) was found to be the owner of the Opponent’s Mark in Australia and the Applicant was successful in its opposition.
[4] See Australian trade mark application number 1882609.
[5] [2020] ATMO 173 (‘Earlier Decision’).
[6] Ibid [45].
11. Mr Mack ‘first created and decided to launch a business under the trade mark LENS.ME around 1 March 2006’.[7] It is declared that the Opponent’s Mark is an original artistic work which Mr Mack created in or around March 2015 and that he retains ownership of all copyright in same. Since 1 June 2015, Mr Mack has licensed the artistic work to the Opponent and a licence agreement documenting this relationship is exhibited to Mack 2. Mr Mack claims that the Trade Mark contains part of the artistic work subsisting in the Opponent’s Mark and states that the Applicant does not have permission to use the artistic work.
[7] Mack 2, [5].
According to Mack 1, the first sale of goods under the Opponent’s Mark took place on 28 June 2015 to a customer based in the United Arab Emirates and sales of optical goods (including contact lenses) to Australian customers have occurred from at least 4 November 2015. To support this, various documents including invoices showing sales of optical goods to Australian addresses during November and December 2015 are exhibited to Mack 2.
13. Mack 1 describes a dinner function in May 2016 which the Applicant’s directors[8] and Mr Mack attended. Mr Mack claims that discussion of the Opponent’s Mark between the Applicant’s directors and himself occurred at this function. On this basis, he contends that the Applicant was aware of the Opponent’s Mark prior to filing the present application and submits that its use of ‘Lens Me’ only occurred after the function. Mack 1 also mentions that the Opponent and the Applicant are currently ‘embroiled in numerous opposition and cancellation actions around the world concerning the LENS.ME brand’.[9]
EIA
[8] Ibid [13]. Mr Mack’s ‘understanding is that the owners/directors of the Opponent are Mr Ghazi Ashwi Mater Al Anzi and Mr Muslet Almutairi’.
[9] Mack 1, [19].
14. Mr Anzi declares that the Applicant was established in 2013 and, with the assistance of a manufacturer, he developed a line of contact lenses. At this time, Mr Anzi ‘coined a new brand for contact lenses: “LENS ME”’[10] and subsequently developed this brand with the aid of a designer. Exhibited to the Anzi Declaration is a translated document from the designer which indicates that the Trade Mark was designed for the Applicant on 4 January 2014.
[10] Anzi Declaration, [9].
15. According to the Anzi Declaration, the ‘LENS ME trade mark was first used in Saudi Arabia in 2014 in relation to contact lenses’.[11] Products bearing the trade mark have subsequently been sold globally including in Asia, Europe, North America and the United Kingdom. Mr Anzi states that, since 2016, the Applicant ‘has directly shipped orders of its LENS ME products to consumers in Australia’.[12]
[11] Ibid [11].
[12] Ibid [23].
Between June 2016 and March 2019, the Applicant filed applications for registration of the Trade Mark (or iterations thereof) across various jurisdictions including Saudi Arabia, Brazil, India and France. The Opponent and the Applicant are known to one another and Mr Anzi confirms that they are engaged in various trade mark disputes.
17. The Applicant’s contact lenses are sold online, through traditional storefronts and via the inflight shopping service of Saudi Arabian Airlines. It is declared that the Applicant’s contact lenses are ‘often mentioned in the media’ and reference is made to publications dated from 2019 to 2020 which cite the Applicant’s brand. The Applicant also promotes its contact lenses at various overseas exhibitions including the ‘2018 Dubai Vision X Exhibition’ which is ‘the Middle East's most established optical and ophthalmic exhibition and conference’.[13]
[13] Ibid [23(d)].
18. Mr Anzi acknowledges ‘some interaction’ with Mr Mack occurred at a dinner function in May 2016. However, Mr Anzi denies discussing any business or sensitive brand information as he ‘did not know Mr Mack or his business’.[14] Mr Anzi further claims that he was not aware of the Opponent trading in Australia prior to the Applicant. In any event, he characterises the Opponent as being ‘simply a retailer of third party branded goods’ that ‘cannot be said to have any reputation or intention to use its mark for class 9 goods’.[15]
EIR
[14] Ibid [24].
[15] Ibid [25], [27].
19. Mack 3 disputes statements made in the Anzi Declaration. Relevantly, Mr Mack claims that the Applicant was not established in 2013, rather it was established in September 2015. He also questions the authenticity of documents exhibited to the Anzi Declaration as well as the purported dates that specific events are alleged to have occurred.[16] Mr Mack also highlights perceived inconsistencies in the EIA and rejects the contention that the Applicant first used the Trade Mark in Saudi Arabia in 2014. Rather, in Mr Mack’s opinion, these sales were under the brand ‘ANASTHESIA’ and the Applicant only commenced use of the Trade Mark after the dinner function in May 2016.[17]
[16] Mack 3, [7], [9], [11], [15].
[17] Ibid [10].
20. Mack 3 reiterates that the Opponent ‘is the owner of the LENS ME trade mark in Australia’[18] and provides an update on disputes that are taking place between the parties in foreign jurisdictions. Additionally, Mr Mack stresses that Mr Anzi’s statement that the Applicant was unaware of the Opponent in 2016 is contradicted by concessions it made in the Earlier Decision. Further, he rejects Mr Anzi’s characterisation of the Opponent as a retailer of third party branded goods. To this end, Mr Mack declares that the Opponent ‘has intended to directly apply the [Opponent’s Mark] to contact lenses, glasses and other optical goods, but has not to date due to the ongoing disputes with [the Applicant] around the world’.[19]
Discussion
[18] Ibid [6].
[19] Ibid [20].
Earlier Decision
21. At the outset, it is important to consider what implications, if any, the Earlier Decision has on the current matter. The Opponent has, in part, relied on the Earlier Decision to establish the current s 58 ground of opposition. Emphasis was placed on the Earlier Decision as confirming the acceptance by the Registrar and the Applicant that the Opponent first used the Opponent’s Mark in respect of optical goods and services in November 2015. In effect, the Opponent urged that the presumptive position in the current matter should be that it has established Australian use of the Opponent’s Mark in relation to contact lenses since November 2015. On this basis, the Opponent submits that ‘even if [the Applicant] did use the [Trade Mark] in Australia from 2016 (which is not accepted), such use post-dates that of [the Opponent] and is determinative in this opposition’.[20]
[20] Opponent’s Submissions, [25].
22. For its part, the Applicant reasoned that the findings of the Earlier Decision were limited to use of the Opponent’s Mark and whether such use inured to Mr Mack who was the holder of the IR. Conversely, the current matter is said to concern an ownership dispute between the Opponent’s use of the Opponent Mark and the Applicant’s use of the Trade Mark. As such, the Applicant asserted that the Earlier Decision has no bearing on this opposition and does not predetermine the question of ownership.
23. Whilst the Earlier Decision was acknowledged, neither party directly addressed if an issue estoppel arises from the ownership findings made therein. For completeness, I note that the question of whether issue estoppel extends to tribunal decisions is not conclusively settled.[21] Be that as it may, the Registrar is not bound by the rules of evidence and retains a broad power to control her proceedings.[22] Upon request, the Registrar is obligated to decide the extent (if any) to which any ground on which the application was opposed has been established.[23] In this context, the Registrar’s remit conceivably includes considering whether a previously decided issue should be revisited. It would, of course, be unusual for the Registrar to depart from her earlier findings. Nevertheless, it remains within the Registrar’s purview provided there is good reason to do so. This much is obvious given the Registrar’s role is to answer the question under s 55 of the Act and not to blindly adopt the findings of the Earlier Decision. To do otherwise may result in the opposition not being fully considered, runs the risk of perpetuating error and, in certain circumstances, may be construed as a refusal by the Registrar to discharge her duty.[24] Here, having reviewed the evidence filed, I consider there is good reason to depart from the ownership findings of the Earlier Decision. The rationale for doing so is outlined below.
[21] See generally Bogaards v McMahon [1988] [1988] FCA 161, [45] (Pincus J); Administration of the Territory of Papua and New Guinea v Guba [1973] HCA 59, [73] (Gibbs J); Commonwealth of Australia v Snell [2019] FCAFC 57, [51] (Allsop CJ, Reeves and Derrington JJ). The position of the Australian Patents Office is that issue estoppel does not apply to matters before Commissioner of Patents: see SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8, [33]–[40].
[22] Trade Mark Regulations 1995 (Cth) regs 21.14(5), 21.15(4).
[23] Act s 55(1).
[24] See, eg, Cadbury UK Ltd v Registrar of Trade Marks [2008] FCA 1126, [16] (Finkelstein J).
Section 58
24. Section 58 of the Act relevantly provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
25. This ground of opposition was particularised in the SGP as follows:
Since at least 4 November 2015, the Opponent, its authorised users and predecessors in title have continually used the [Opponent’s Mark] in Australia, to which the [Trade Mark] is substantially identical, in relation to the same goods or similar goods as those goods covered by the Opposed Application in Australia.
In [the Earlier decision]:
a) the Applicant has conceded that the first user of the trade mark LENS.ME in Australia was the Opponent and not the Applicant; and
b) the Delegate found the Opponent and not the Applicant to be the owner and first user of the trade mark lens.me in Australia;
As the [Trade Mark] is substantially identical with the [Opponent’s Mark] and is applied for in relation to the same or similar goods as those for which the [Opponent’s Mark] is used, the Opponent (and not the Applicant) is therefore the owner of the [Trade Mark] in Australia.
26. The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court explained:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[25]
[25] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
27. To succeed under this ground, the Opponent must establish:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[26] (‘First Requirement’);
the Goods are the ‘same kind of thing’ as the goods for which the trade mark relied upon by the Opponent has been used[27] (‘Second Requirement’); and
a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant[28] (‘Third Requirement’).
[26] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[27] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[28] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
28. As will become apparent, it is appropriate to commence with consideration of the Second Requirement. The expression ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J said:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes ... This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size".[29]
[29] [2007] FCAFC 184, [89] (emphasis added) (citations omitted).
29. The test for whether goods are the ‘same kind of thing’ is narrower than the test for whether goods are of the same description.[30] It follows that goods which are evidently of the same description, such as backpacks and handbags, will not necessarily be considered to be the ‘same kind of thing’.[31] Establishing if goods are the ‘same kind of thing’ can be resolved by ‘asking whether the relevant goods or services are essentially the same’[32] and requires the goods to be truly equivalent.
[30] Ibid [12]–[13] (Kenny J).
[31] Ibid [90] (Allsop J).
[32] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [64] (Nicholas, Yates and Beach JJ).
30. In line with the Earlier Decision, it is alleged that the Opponent’s Mark has been used in Australia in relation to contact lenses since at least 4 November 2015.[33] The Opponent’s evidence in the current matter includes Mack 2. This declaration was before the delegate in the Earlier Decision[34] who observed that:
[Mr Mack] does not dispute the assertion that [the Opponent] used the [Opponent’s Mark] in Australia from at least 4 November 2015, and the evidence supports this assertion. There is also agreement between the parties that [the Opponent] used the [Opponent’s Mark] in connection with [contact lenses; glasses, sunglasses and contact lenses; optical goods; online retail store services relating to cosmetic and beauty products; optical services]; the evidence supports this assertion also.[35]
[33] Mack 3, [6(e)].
[34] The Opponent’s evidence in the Earlier Decision was comprised of Mack 2 together with a declaration made by Natalia Josephine Blecher.
[35] Earlier Decision (n 5) [28] (emphasis added).
Unsurprisingly, reliance was placed primarily on the examples of use contained in Exhibits FM-8 and FM-9 to Mack 2 as establishing this ground. Supplementary reference was also made to the examples of use shown in Exhibit FM-7 to Mack 3. In the Opponent’s view, the evidence filed ‘is sufficient to establish that the [Opponent’s Mark] has been used as a trade mark in relation to contact lenses’ since November 2015.[36] For the reasons which follow, I am not satisfied that the evidence supports the alleged use notwithstanding the findings made in the Earlier Decision.
[36] Opponent’s Submissions, [57].
Exhibit FM-8 to Mack 2 contains a document which lists Australian orders from the Opponent’s sales register between 4 November 2015 and 26 August 2018. This document does not assist the Opponent because each listed entry only provides the order number, purchase date, sale price, order status, shipping details and product number. The Opponent’s Mark (or iterations thereof) does not appear anywhere in this document and it is unclear what was purchased given only the product number is provided. At its highest, this document merely demonstrates that the Opponent supplied unknown products and some of these were delivered to Australia before the Relevant Date.
33. Exhibit FM-9 to Mack 2 is comprised of ‘sample invoices for Australian sales of LENS.ME products bearing the [Opponent’s] Mark’.[37] A total of 17 invoices dated between 4 November 2015 and 31 December 2015 are provided. Each invoice header displays the Opponent’s Mark together with Australian billing and shipping details. On its face, this use of the Opponent’s Mark is capable of being characterised as use in relation to the goods itemised in each invoice.[38] However, upon closer inspection, the exhibited invoices suffer the same underlying issue – namely, the product description of each invoice reveals that the goods sold were Solotica or Bella branded lenses. Specifically, the goods are described as being from Solotica’s ‘Hidrocor’, ‘Solflex’ or ‘Natural Colors’ collections or Bella’s ‘Diamond Collection’. Tellingly, each product description is accompanied by an image of the relevant Solotica or Bella packaging.
[37] Mack 2, [12(c)].
[38] Act ss 7(4), 9(1)(c)(ii).
34. To attenuate this issue, the Opponent highlighted Exhibit FM-7 to Mack 3 which it says shows that the lenses were delivered in packaging bearing the Opponent’s Mark. Relevantly,[39] Exhibit FM-7 contains a screenshot from a YouTube review, titled ‘New! Solotica Hidrocor Quartzo Review from Lens.Me.’, which was posted on 24 November 2015 (‘Screenshot’). The Screenshot is a still frame of the reviewer holding a box bearing the Opponent’s Mark. In the Opponent’s view, this constitutes use of the Opponent’s Mark in relation to contact lenses ‘even if the contact lenses themselves may have featured other trade marks’ because it is ‘not uncommon for goods to be sold bearing more than one trade mark’.[40] It is true that multiple trade marks can be used on the same good and a trade mark can be used in relation to goods without having to physically appear on same.[41] However, I do not accept that the evidence demonstrates use of the Opponent’s Mark in relation to contact lenses as opposed to the retail of such goods. In this regard, a similar characterisation issue arose in Optical 88 Limited v Optical 88 Pty Limited (No 2) (‘Optical’)[42] which, coincidentally, involved optical goods.
[39] The majority of examples contained in Exhibit FM-7 to Mack 3 are irrelevant given the material is dated after the Relevant Date and/or pertains to use outside of Australia.
[40] Opponent’s Submissions, [57].
[41] See, eg, Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51, [16] (Jacobs J).
[42] [2010] FCA 1380 (Yates J) (‘Optical’).
35. In Optical, Yates J was required to determine whether the evidence showed use of the trade marks in ‘other relation’ to the optical goods which were the subject of non-use applications.[43] As a preliminary consideration, Yates J remarked that:
There is a suggestion in the literature that use of a mark in relation to retail services for goods is use equally in relation to the goods themselves. In my view that simply does not follow. Whether it be the case or not is a question of mixed fact and law having regard to the particular circumstances of the case. … It is perhaps sufficient for me to say that there is no principle of general application in Australian trade mark law that use of a mark in relation to retail services for goods is use in relation to the goods themselves.[44]
[43] Act s 7(4) provides that ‘use of a trade mark in relation to goods’ includes use of the trade mark in other relation to the goods (emphasis added).
[44] Optical (n 42) [221] (emphasis added).
36. In finding that the evidence did not demonstrate use of the trade marks in relation to the goods themselves, Yates J explained that the evidence showed:
[T]hat use was in relation to the provision of the applicant’s services as a retail supplier of optical goods and of repair services for optical goods. The use was not a use of the modified ‘707 mark on or in physical or other relation to goods: see s 7(4). There is no evidence that any of the relevant transactions involved goods branded with the modified ‘707 mark ... More generally, there is no evidence that the applicant itself supplies or has supplied goods branded with the modified ‘707 mark, the ‘707 mark or the ‘966 mark. The business records tendered in relation to the transactions on which the applicant relied make clear that many of the goods supplied by the applicant were projected into the course of trade by others using trade marks applied by others. Some of these trade marks are identifiable as very well-known fashion and luxury brands. It was those marks that functioned as the badge of origin for those goods. Those goods passed through the hands of the applicant in the course of trade, but in no true sense was the applicant the source or origin of those goods. The applicant was no more than the source or origin of particular retail services involved in the down-stream supply of those goods. The business records also show the use by the applicant of its separate “house” brands in relation to goods. In those instances it was those house brands that functioned as the badge of origin of those goods. In each case the use of the modified ‘707 mark was in physical or other relation to its retail services, but nothing more.[45]
[45] Ibid [254] (emphasis added). Justice Yates’ finding that the evidence was properly characterised as use in relation to services and not goods was affirmed in Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130, [16]–[22] (Cowdroy, Middleton and Jagot JJ).
37. Parallels may be drawn between Optical and the current matter. First, there is no evidence that the goods listed in the exhibited invoices bore the Opponent’s Mark. Even when the Screenshot is considered in its most favourable light, it goes no further than showing that Solotica packaged lenses were delivered in a transport box bearing the Opponent’s Mark. It is no different to retailers such as Amazon or Woolworths who deliver third party branded goods in transport packaging bearing their own trade marks. Consumers readily apprehend that such trade marks are being used to indicate the source of the retail services and not the goods themselves. For similar reasons, the Opponent Mark’s on the transport box would operate as ‘no more than the source or origin of particular retail services involved in the down-stream supply’ of Solotica branded lenses.
38. Second, the Opponent’s evidence is entirely congruent with it being a retailer of third party branded contact lenses. The evidence is devoid of any material that the Opponent supplies (or has supplied) optical goods bearing the Opponent’s Mark and it provides no foundation to infer that any of the contact lenses offered were manufactured by or originated from the Opponent. Indeed, the evidence reveals that the Opponent consistently describes itself as being ‘an online based optical store offering different brands of medical and colored contact lenses like Anesthesia and Solotica with free shipping’ or an ‘online optical shop for the Middle East – All contact lens brands including Acuvue, Solotica and Bella on stock’.[46]
[46] Mack 2, Exhibit FM-4 (emphasis added).
39. Finally, Mr Mack declares that the Opponent ‘has intended to directly apply the [Opponent’s Mark] to contact lenses, glasses and other optical goods, but has not to date due to the ongoing disputes with [the Applicant] around the world’.[47] This statement encapsulates the Opponent’s evidence. Simply put, there is no evidence that the Opponent’s Mark has been used upon, or in physical or other relation to, optical goods. Each invoice exhibited shows use of the Opponent’s Mark in relation to the supply of contact lenses bearing third party trade marks. This constitutes use of the Opponent’s Mark in relation to ‘retail services, but nothing more’. Given all the relevant circumstances, the use of the Opponent’s Mark in the exhibited invoices and the Screenshot are properly characterised as uses in ‘other relation’ to the retail of contact lenses. Accordingly, I am not satisfied that the Opponent’s Mark has been used in relation to contact lenses or, for that matter, optical goods before the Relevant Date.
[47] Mack 3, [20] (emphasis added).
40. Pre-emptively, the Opponent submitted that the retail of contact lenses are the ‘same kind of thing’ as contact lenses.[48] Attention was drawn to Sola Tube Australia Pty Ltd v Gabriel Andrews (‘Sola’)[49] wherein the delegate was ‘inclined to believe’ that the ‘claim to ownership of the [relevant mark] in respect of skylights and associated goods’ extended to ‘building construction, repair and installation services relating to those goods’.[50] That is, building construction, repair and installation services relating to skylights, windows and roof vents were, in the eyes of the delegate, the ‘same kind of thing’ as the actual goods.
[48] Opponent’s Submissions, [57].
[49] [2014] ATMO 103 (‘Sola’).
[50] Ibid [18].
41. I do not find Sola instructive. Central to the outcome in Sola was the finding that skylights, windows and roof vents are ‘relatively specialized goods’ and that manufacturers of such goods ‘would reasonably be expected to have the expertise to provide’ the services to construct, install and repair same.[51] By contrast, the current matter concerns retail services which are fundamentally different to construction, repair and installation services. Whilst it is desirable for contact lens retailers to have optometric expertise, broadly speaking, there is no requirement that retailers be appropriately qualified. It is acknowledged that the retail of contact lenses and contact lenses may fall within the ambit of being closely related, however, this is not sufficient to establish they are the ‘same kind of thing’. Put differently, there is nothing before me to suggest that these retail services are truly equivalent to the goods. To this end, the observations of the delegate in Andrew Scott v The Line II Pty Ltd,[52] who was faced with a comparable question of whether clothing and apparel is the ‘same kind of thing’ as the retail of clothing and other apparel, are informative:
Clothing and apparel are manufactured goods designed to be worn by individuals. They are tangible utilitarian things that can be picked up, inspected, and used for a specific purpose. Conversely, a retail service is an intangible combination of things. A retail service generally encompasses the sale of various goods originating from a number of trade sources. Further, while retailers may also at times sell their own lines of goods, this is often not the case. The primary purpose of a retail service is to bring together a variety of goods for purchase under the banner of one retailer. In addition to selling the goods, the retailer will also often provide other ancillary services, such as advice on the goods (particularly in the case of a brick-and-mortar store) and accepting the return of defective goods (at which stage the retailer, not the direct customer, will deal with the manufacturer). As such, while there is a close relationship between retail services for clothing and apparel and the goods themselves, there are some fundamental differences. The service is not a substitute for the goods, or vice versa.[53]
[51] Ibid [17]–[19].
[52] [2022] ATMO 9.
[53] Ibid [34] (emphasis added).
42. In my view, the above considerations have equal force with respect to the retail of contact lenses and contact lenses themselves. The services and goods are not essentially the same. Consequently, I am not satisfied that that the retail of contact lenses is the ‘same kind of thing’ as the Goods.
43. Accordingly, the Second Requirement is not satisfied. Given establishing this ground is contingent on satisfying all three requirements detailed at [27] of this decision, it is not necessary to consider the First Requirement or Third Requirement.
44. The s 58 ground of opposition has not been established.
Section 60
45. Section 60 of the Act relevantly provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
46. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent’s Mark was identified as supporting this ground of opposition and the SGP was particularised as follows:
The Opponent, its authorised users and predecessors in title have used the [Opponent’s Mark] as recited above in relation to Section 58 since at least 4 November 2015 in Australia.
The Opponent therefore has a reputation in the [Opponent’s Mark] in Australia. Because of that reputation, and the similarity of the [Trade Mark] to the [Opponent’s Mark], use of the [Trade Mark] would be likely to deceive or cause confusion, including as to association with the Opponent and its goods and services.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[54] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[55]
[54] [2000] FCA 1335, [81] (‘McCormick’).
[55] [1992] FCA 159, [118] (‘ConAgra’).
49. Further, Kenny J said in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[56]
[56] McCormick (n 54) [86].
50. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[57] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[58]
[57] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[58] ConAgra (n 55) [77].
51. The Opponent’s Submissions drew attention to Exhibits FM-8 and FM-9 to Mack 2. In its view, this evidence established that ‘thousands of optical goods’ had been sold in Australia under and by reference to the Opponent’s Mark ‘for almost three years’ before the Relevant Date’.[59] Further, the promotion of the Opponent’s Mark ‘through a wide array of media, including social media accounts such as Instagram, Facebook, YouTube and Pinterest; and via [the Opponent’s] website’ was highlighted as supporting its reputation in Australia.[60]
[59] Opponent’s Submissions, [84].
[60] Ibid [85].
52. The Applicant’s Submissions were critical of the Opponent’s position. The Applicant contended that the evidence only disclosed ‘a limited number of sales of third party branded lenses’ under the Opponent’s Mark and there is no evidence of an Australian audience for any of the relied on promotional activities.[61] As such, it asserted that the Opponent’s Mark lacked the requisite reputation in Australia as at the Relevant Date.
[61] Applicant’s Submissions, [71].
53. In my assessment, there is considerable merit in the Applicant’s criticisms. For the reasons outlined at [32] of this decision, the document contained in Exhibit FM-8 to Mack 2 simply cannot assist in establishing the reputation of the Opponent’s Mark because it does not show any use of same. Similarly, Exhibit FM-9 to Mack 2 consists of 17 invoices showing Australian use of the Opponent’s Mark in relation to modest retail sales over two months in 2015. This evidence does not provide a cogent basis to infer that the Opponent’s Mark had acquired a reputation in Australia at the Relevant Date. Meanwhile, the reference to the Opponent’s Mark being promoted ‘through a wide array of media’ has limited probative value given it is a vague statement which has not been particularised in terms of how many Australian users viewed, accessed, or interacted with the identified media.
54. More generally, the evidence is conspicuously devoid of any standard metrics such as revenue, advertising or promotional figures. In the absence of such information, it is difficult to assess the nature of the reputation allegedly enjoyed by the Opponent’s Mark. Likewise, I note that reliance is placed on approximately one year and nine months of use of the Opponent’s Mark in Australia before the Relevant Date. By any measure, this is a very short period of time in which to establish a reputation and the evidence filed falls well short of establishing that any such reputation existed.
55. Accordingly, I am not satisfied that the Opponent’s Mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Given s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
56. The s 60 ground of opposition has not been established.
Section 42
57. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:…
(b) its use would be contrary to law.
58. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[62] The SGP particularises contraventions of ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth), the tort of passing off as well as copyright infringement as underpinning this ground.
[62] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
Turning to the alleged contraventions of the ACL, s 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[63] As discussed above,[64] the Opponent has failed to establish the s 60 ground of opposition. It follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding in relation to the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[65]
[63] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[64] See [45]–[55] of this decision.
[65] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
60. With respect to the tort of passing off, the observations of Hill J addressing the relationship between s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are relevant:
The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[66]
[66] [1989] FCA 506, [40].
61. Section 18 of the ACL is the equivalent of s 52 of the TPA.[67] As such, I am not satisfied that use of the Trade Mark would amount to passing off at common law because I have found that s 18 of the ACL would not be contravened.
[67] See Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] wherein Rangiah J observed that ‘s 18 of the ACL replaced s 52 of the TPA and the provisions are in identical terms’.
62. With respect to the alleged copyright infringement, s 36(1) of the Copyright Act 1968 (Cth) (‘CA’) provides:
Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.
63. Section 14(1)(a) of the CA states that an act done in relation to a work includes ‘the doing of that act in relation to a substantial part of the work’ and s 31(1)(b) of the CA provides that copyright in an artistic work endows the owner with, inter alia, the exclusive right to reproduce the artistic work in a material form and to publish it. The reproduction of a copyright work requires the establishment of two elements – namely, an objective similarity between the relevant works and a causal connection.[68]
[68] SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59, [4] (Gibbs CJ).
64. The Opponent’s position is premised on the Opponent’s Mark being an original artistic work and Mr Mack’s asserted ownership of the copyright in same. Detailed submissions addressing the subsistence of copyright, Mr Mack being a qualified person and the ‘considerable similarities’ between the Opponent’s Mark and Trade Mark were provided.[69] The Opponent’s Submissions postulate that the Trade Mark constitutes a reproduction of the Opponent’s Mark (or a substantial part of it) and reiterate that the Applicant’s alleged reproduction is unauthorised.
[69] Opponent’s Submissions, [61]–[75].
65. Even if I were to accept these submissions, the significant difficulty faced by the Opponent is that the existence of a causal connection between the Opponent’s Mark and the creation of the Trade Mark is tenuous based on the evidence filed. The Opponent’s evidence is that the causal connection between the works was established at the dinner function in May 2016 wherein it is alleged that Mr Mack discussed the Opponent’s Mark with the Applicant’s directors. However, the Applicant disputes the nature of this discussion and has led evidence which indicates the Trade Mark was independently created by a designer in 2014 which is more than 2 years prior to the dinner function.[70] The Opponent submits that the Applicant’s evidence should not be accepted because the original version of the translated document has not been provided and there is a discrepancy in the name of the designer.[71] Whilst I acknowledge the existence of these minor deficiencies, I do not consider them to be fatal to the narrative advanced by the Applicant. This is particularly so given additional documents have been filed which, although circumstantial and also containing minor deficiencies, nevertheless corroborate that the Applicant had, at the very least, adopted the words ‘Lens Me’ as its brand name prior to 2016.[72] This obviously lends credence to the evidence provided by the designer that the Trade Mark was created in or around 2014. In this setting, the Applicant has advanced sufficiently plausible evidence to indicate that it independently created the Trade Mark before the Opponent’s Mark came into existence. On balance, I am not satisfied that a causal connection exists between the Opponent’s Mark and the creation of the Trade Mark.
[70] Anzi Declaration, Exhibit GAA-3.
[71] The document is from ‘Special Designs’ but, at one point the designer refers to itself as ‘Special Design’.
[72] Anzi Declaration, Exhibits GAA-4 and GAA-5.
66. The s 42(b) ground of opposition has not been established.
Section 62A
67. Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
68. A finding of bad faith will not be established easily given the ‘very serious’ nature of the allegation.[73] The notion of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2), who observed:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.
…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[74]
[73] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[74] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (emphasis added).
69. This ground was relevantly set out in the SGP as follows:
The Applicant's conduct in selecting the [Trade Mark] was:
(a)unfairly exploitative of the Opponent's rights in the [Opponent’s Mark] that have accrued by reason of its use in Australia and otherwise exploitative of Florian Mack’s rights in the trade mark LENS.ME overseas;
(b)designed to acquire an unfair advantage for its business at the Opponent’s expense in Australia and otherwise at Florian Mack’s expense elsewhere in the world, including by:
(i)alluding to the [Opponent’s Mark] and/or LENS.ME trade mark; and/or:
(ii)attempting to reinforce the consumers’ association between the [Opponent’s Mark] and the [Trade Mark].
...
The knowing adoption and subsequent filing of the [Trade Mark] in the context of the Applicant’s awareness of the Opponent, its authorised users and predecessors in title, Florian Mack, the Opponents Mark and the brand LENS.ME more generally, amounts to conduct that falls short of the acceptable standards of commercial behaviour and the Opposed Application was therefore made in bad faith.
70. It is apparent that the parties are involved in numerous disputes regarding the ownership of ‘Lens Me’ and that each party believes that they are entitled to the use of their respective trade marks. It seems likely that the Applicant was aware of the Opponent and the Opponent’s Mark prior to filing the current application. However, without more, equating this mere awareness to bad faith would be unduly absolute. No cogent evidence has been filed by the Opponent to establish the application was made in bad faith other than an assertion that ‘the substantial similarities between the [Opponent’s Mark] and the [Trade Mark] are such that it would be highly improbable that these marks were devised independently.[75] However, as the Applicant’s Submissions highlighted, there is simply ‘no evidence of any previous business dealings, agreement, understanding, representation, or other relationship between the parties’ nor is there any ‘evidence of one party attempting to block the other or sell the trade mark to the other’.[76] Accordingly, I am not satisfied on the balance of probabilities that the application was made in bad faith.
[75] Opponent’s Submissions, [94].
[76] Applicant’s Submissions, [89].
71. The s 62A ground of opposition has not been established.
Decision
72. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
73. The Opponent has not established any ground of opposition. As such, trade mark application 1865606 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
74. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
15 May 2023
and Edelman JJ).
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Costs
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Jurisdiction
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Res Judicata
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Stay of Proceedings
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